Intellectual Property Law

CHAPTER
1 Gallo contends that mighty adapted the Gallo trademark to ride in Gallo winery, E&J gallo
trademarks established reputation and popularity thus causing confusion on the purchasing
INTELLECTUAL PROPERTY RIGHTS public who associate Gallo trademarks with Gallo winery.
Mighty corp. contends that Gallo cigarettes and Gallo winery are totally unrelated products;
Q: What law governs Intellectual Properties? the latter’s registration certificate covered wines only not cigarettes and sold through
A: Republic Act No. 8293, also know as Intellectual Property Code of the Philippines. different channels of trade.
The Makati RTC ruled in favor of Mighty corp holding that Gallo’s trademarks reg. certificate
covered wines only and that respondent’s wines and petitioner’s cigarettes were unrelated
Q: When did it take effect? goods.
A: It was approved by Pres. Fidel V. Ramos on June 6, 1997 and became effective of January 1, The CA dismissed the petition for certiorari for the denial of the writ of preliminary injunction
1998. but the RTC ruled the petitioners liable for TM infringement and unfair competition and
enjoined them from using E&J registered trademark
Q: Non-retroactivity, what does it mean?
A: Infraction of the law (RA 8293) prior to the date of effectivity is not punishable under the Issue:
said law. Whether or not RA 8293 was applicable in the case

As held in the case of Mighty Corporation v. E & J Gallo Winery, G.R. No, 154342, July 14, 2004, Ruling:
“...it is a fundamental principle that the validity and obligatory force of a law proceed from the
fact that it has first been promulgated. A law that is not yet effective cannot be considered as No. It is the trademark law and Paris convention which is applicable and not the INP code. The
conclusively known by the populace. To make a law binding even before it takes effect may suit was filed March 12, 1993 for trademark infringement and unfair competition committed
lead to the arbitrary exercise of the legislative power. Nova constitutio futuris formam during the effectivity of the Paris convention and trademark law.
imponere debet non praeteritis. A new state of the law ought to affect the future, not the past.
It is a fundamental principle that the validity and obligatory force of law proceed from the
fact that it has first been promulgated. A law that is not yet effective cannot be
considered as conclusively known by the populace. To make a law binding even before
Mighty Corporation v. E & J Gallo Winery, G.R. No, 154342, July 14, 2004 it takes effect may lead to the arbitrary exercise of the legislative power. A new state of
Doctrine: A law that is not yet effective cannot be considered as conclusively known by the law ought to affect the future, not the past.
populace. To make a law binding even before it takes effect may lead to the arbitrary exercise
of the legislative power.
Q: What is the doctrine of Reciprocity?

A: Any person who:

1. A national of;
Facts: Gallo Winery is foreign corporation not doing business in the Philippines but organized 2. Is domiciled in; or
and existing under the laws of the state of California. It sells and produces different kinds of 3. Has a real and effective industrial establishment in, a country:
wines and brandy products under different registered trademarks including Gallo and Ernest
and Julio Gallo wine trademarks. • Which is a party to any convention, treaty or agreement, relating to intellectual
Andersons, Gallo winery’s exclusive wine importer and distributor in the Philippines selling property rights or the repression of unfair competition, to which the Philippines is
the products in its own name and or its own account. also a party; or
• Its laws extends reciprocal rights to the Philippine NATIONALS;
Gallo wine trademark was registered in the Philippine register IPO on November 16, 1979
renewed on November 16, 1991. It also applied for registration of E&J Gallo wine but no
record of it being approved. Shall be entitled to benefits to the extent necessary to give effect to such convention, treaty or
Mighty corp & La Campana & their sister company Tobacco industries are engaged in the reciprocal law, in a ddition to the rights which any owner of an intellectual property right is
cultivation of tobacco products for which they have been using the Gallo cigarette trademark. otherwise entitled under IPC.
Gallo winery sued mighty for trademark and tradename infringement and unfair competition.
Intellectual Property Law (Atty. Busmente)

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HOWEVER: Any condition, burden, restriction, limitation, diminution, requirement or penalty Q: Difference between Patentable inventions, Trademark, Trade name, and Copyright.
imposed by a foreign country on a Philippine National seeking protection of intellectual A: A trademark is any visible sign capable of distinguishing the goods (trademark) or
property rights in that country, shall reciprocally be enforceable upon that country’s nationals services (service mark) of an enterprise and shall include a stamped or marked container of
within the Philippine jurisdiction. goods.

A trade name means the name or designation identifying or distinguishing an enterprise.

Sasot v. People of the Philippines, G.R. No. 143193 June 29, 2005 Copyright is confined to literary and artistic works which are original intellectual creations in
the literary and artistic domain protected from the moment of their creation.
“The crime of Unfair Competition punishable under Article 189 of the Revised Penal Code is a
public crime. It is essentially an act against the State and it is the latter which principally Patentable inventions refer to any technical solution of a problem in any field of human
stands as the injured party. The complainant's capacity to sue in such case becomes activity which
immaterial.”
is new, involves an inventive step and is industrially applicable.

What preceded this petition for certiorari was a letter-complaint filed before the NBI charging
Hemandas with a criminal offense, i.e., violation of Article 189 of the Revised Penal Code. If
prosecution follows after the completion of the preliminary investigation being conducted by
the Special Prosecutor the information shall be in the name of the People of the Philippines
and no longer the petitioner which is only an aggrieved party since a criminal offense is Elidad Kho v. Court of Appels, G.R. No. 115758, March 19, 2002
essentially an act against the State. It is the latter which is principally the injured party Doctrine: Trademark, copyright and patents are different intellectual property rights that
although there is a private right violated. Petitioner's capacity to sue would become, therefore, cannot be interchanged with one another.
of not much significance in the main case. We cannot allow a possible violator of our criminal Trademark, copyright and patents are different intellectual property rights that cannot be
statutes to escape prosecution upon a far-fetched contention that the aggrieved party or interchanged with one another. A trademark is any visible sign capable of distinguishing the
victim of a crime has no standing to sue. goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods.] In relation thereto, a trade name means the name or designation
DOCTRINE: In upholding the right of the petitioner to maintain the present suit before our identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to
courts for unfair competition or infringement of trademarks of a foreign corporation, we are literary and artistic works which are original intellectual creations in the literary and artistic
moreover recognizing our duties and the rights of foreign states under the Paris Convention domain protected from the moment of their creation. Patentable inventions, on the other
for the Protection of Industrial Property to which the Philippines and France are parties. We hand, refer to any technical solution of a problem in any field of human activity which is new,
are simply interpreting and enforcing a solemn international commitment of the Philippines involves an inventive step and is industrially applicable
embodied in a multilateral treaty to which we are a party and which we entered into because
it is in our national interest to do so. Petitioner in the case at hand has no right to support her claim for the exclusive use of the
subject trade name and its container. The name and container of a beauty cream product are
proper subjects of a trademark inasmuch as the same falls squarely within its definition. In
order to be entitled to exclusively use the same in the sale of the beauty cream product, the
Q: What is Intellectual Property? (MEMORIZE!!) user must sufficiently prove that she registered or used it before anybody else did. The
A: SECTION 4.1. The term "intellectual property rights" consists of: petitioner’s copyright and patent registration of the name and container would not guarantee
her right to the exclusive use of the same for the reason that they are not appropriate subjects of
a) Copyright and Related Rights; the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for
b) Trademarks and Service Marks; the reason that the petitioner has not proven that she has a clear right over the said name and
c) Geographic Indications; container to the exclusion of others, not having proven that she has registered a trademark
d) Industrial Designs; thereto or used the same before anyone did.
e) Patents;
f) Layout-Designs (Topographies) of Integrated Circuits; and
g) Protection of Undisclosed Information

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Pearl & Dean (Phil.), Inc. v. Shoemart, Inc. and North Edsa Marketing, Inc., G.R. No. public without the protection of a valid patent, are subject to appropriation without
148222, August 15v, 2003 significant restraint.

Facts:
Petitioner Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of
advertising display units simply referred to as light boxes. Pearl and Dean was able to secure a Phil. Pharmawealth, Inc. v. Pfizer, Inc. and Pfizer (Phil.), Inc., G.R. No. 167715, November
Certificate of Copyright Registration over the illuminated display units. Sometime in 1985, 17, 2010
Pearl and Dean negotiated with respondent Shoemart, Inc. (SMI) for the lease and installation
of the light boxes in SM City North Edsa. Since SM City North Edsa was under construction at
that time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and Dean RA 8293 is silent with respect to any remedy available to litigants who intend to question an
agreed. Only the contract for SM Makati, however, was returned signed. However, in 1986, interlocutory order issued by the BLA-IPO. Hence, in the absence of such a remedy, the
SMI rescinded the contract for SM Makati due to non-performance of the terms thereof. provisions of the Rules of Court shall apply in a suppletory manner, as provided under Section
Sometime in 1989, Pearl and Dean received reports that exact copies of its light boxes were 3, Rule 1 of the same Rules and Regulations. The CA, and not the IPO Director General, has
installed at SM City and in the fastfood section of SM Cubao. It further discovered that jurisdiction to determine whether the BLA-IPO committed grave abuse of discretion in
respondent North Edsa Marketing Inc. (NEMI) is a sister company of SMI and was set up denying respondents' motion to extend the effectivity of the writ of preliminary injunction
primarily to sell advertising space in lighted display units located in SMI's different branches. which the said office earlier issued.
In the light of its discoveries, Pearl and Dean, sent a letter to both SMI and NEMI enjoining
them to cease using the subject light boxes and to remove the same from SMI's establishments
and the payment to Pearl and Dean of compensatory damages in the amount of Twenty Q: Where to appeal decisions of Director General?
Million Pesos (P20,000,000.00). Claiming that both SMI and NEMI failed to meet all its A: SECTION 7. “…The decisions of the Director General in the exercise of his appellate
demands, Pearl and Dean filed a case for infringement of trademark and copyright, unfair jurisdiction in respect of the decisions of the Director of Patents, and the Director of
competition and damages. The Regional Trial Court of Makati ruled in favor of Pearl and Dean. Trademarks shall be appealable to the Court of Appeals in accordance with the Rules of
On appeal, however, the Court of Appeals reversed the trial court. The appellate court upheld Court; and those in respect of the decisions of the Director of Documentation, Information and
SMI when it posited that what was copyrighted were the technical drawings only, and not the Technology Transfer Bureau shall be appealable to the Secretary of Trade and Industry;”
light boxes themselves, and since the light boxes cannot, by any stretch of the imagination, be
considered as either prints, pictorial illustrations, advertising copies, labels, tags or box wraps,
to be properly classified as copyrightable under the law. Hence, the present petition. Exercise original jurisdiction to resolve disputes relating to the terms of a license involving the
author's right to public performance or other communication of his work. The decisions of the
Director General in these cases shall be appealable to the Secretary of Trade and Industry.
Ruling:

The Supreme Court affirmed the decision of the Court of Appeals and denied the
petition. According to the Court, petitioner Pearl & Dean secured its copyright under the
classification class "O" work or under Section 2 (O) of P.D. 49. As such, petitioner's copyright
protection extended only to the technical drawings and not to the light box itself because the
latter was not at all in the category of "prints, pictorial illustrations, advertising copies, labels,
tags and box wraps." While P & D indeed owned a valid copyright, the same could have
referred only to the technical drawings within the category of "pictorial illustrations." It could
not have possibly stretched out to include the underlying light box. The strict application of
the law's enumeration in Section 2 of PD 49 prevented the Court from giving petitioner even a
little leeway, that is, even if its copyright certificate was entitled "Advertising Display Units."
What the law does not include, it excludes, and for the good reason: the light box was not a
literary or artistic piece, which could be copyrighted under the copyright law. The Court also
ruled that petitioner could not legally prevent anyone from manufacturing or commercially
using its invention for the main reason that it never secured a patent for it. The Court
emphasized that to be able to effectively and legally preclude others from copying and
profiting from an invention, a patent is a primordial requirement. No patent, no
protection. The ultimate goal of a patent system is to bring new designs and
technologies into the public domain through disclosure. Ideas, once disclosed to the


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QUIZ 4. Those that prohibit the use of competitive technologies in a non-exclusive
Q: What is a Technology Transfer Arrangement? technology transfer agreement;
A: Technology transfer agreement is a licensing contract between an intellectual property 5. Those that establish a full or partial purchase option in favor of the licensor;
right owner, as the licensor and a second party, as the licensee who was granted the authority 6. Those that obligate the licensee to transfer for free to the licensor the inventions or
to commercially exploit the same intellectual property right under specified terms and improvements that may be obtained through the use of the licensed technology;
conditions. 7. Those that require payment of royalties to the owners of patents for patents which
are not used;
The law mandates that TTA contains the mandatory provisions (Section 88) and at the same 8. Those that prohibit the licensee to export the licensed product unless justified for
time does not include the prohibited clauses (Section 87). Failure to comply with the same the protection of the legitimate interest of the licensor such as exports to countries
would AUTOMATICALLY render the TTA unenforceable. where exclusive licenses to manufacture and/or distribute the licensed product(s)
have already been granted;
SECTION 4.2. The term “technology transfer agreements” refers to contracts or agreements 9. Those which restrict the use of the technology supplied after the expiration of the
involving the transfer of systematic knowledge for the manufacture of a product, the technology transfer arrangement, except in cases of early termination of the
application of a process, or rendering of a service including management contracts; and the technology transfer arrangement due to reason(s) attributable to the licensee;
transfer, assignment or licensing of all forms of intellectual property rights, including licensing 10. Those which require payments for patents and other industrial property rights after
of computer software except computer software developed for mass market. their expiration, termination arrangement;
11. Those which require that the technology recipient shall not contest the validity of
Q: What are the Mandatory provisions? (IPC, Sec. 88) any of the patents of the technology supplier;
A: 12. Those which restrict the research and development activities of the licensee
designed to absorb and adapt the transferred technology to local conditions or to
1. That the laws of the Philippines shall govern the interpretation of the same and in initiate research and development programs in connection with new products,
the event of litigation, the venue shall be the proper court in the place where the processes or equipment;
licensee has its principal office;
13. Those which prevent the licensee from adapting the imported technology to local
2. Continued access to improvements in techniques and processes related to the conditions, or introducing innovation to it, as long as it does not impair the quality
technology shall be made available during the period of the technology transfer standards prescribed by the licensor;
arrangement;
14. Those which exempt the licensor for liability for non-fulfilment of his
3. In the event the technology transfer arrangement shall provide for arbitration, the responsibilities under the technology transfer arrangement and/or liability arising
Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration from third party suits brought about by the use of the licensed product or the
Rules of the United Nations Commission on International Trade Law (UNCITRAL) or licensed technology; and
the Rules of Conciliation and Arbitration of the International Chamber of Commerce
(ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral 15. Other clauses with equivalent effects. (Sec. 33-C (2), R.A 165a)
country; and
4. The Philippine taxes on all payments relating to the technology transfer
arrangement shall be borne by the licensor.

Q: What are the Prohibited provisions? (IPC, Sec. 87)
A:
1. Those which impose upon the licensee the obligation to acquire from a specific
source capital goods, intermediate products, raw materials, and other technologies,
or of permanently employing personnel indicated by the licensor;
2. Those pursuant to which the licensor reserves the right to fix the sale or resale
prices of the products manufactured on the basis of the license;
3. Those that contain restrictions regarding the volume and structure of production;

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CHAPTER 2 Director of Legal Affairs shall have the power to hold and punish for
INTELLECTUAL PROPERTY OFFICE contempt all those who disregard orders or writs issued in the course of
the proceedings. (n)
The Director of Legal Affairs shall have the power to hold and punish for
THE BUREAUS contempt all those who disregard orders or writs issued in the course of
the proceedings. (n)
I. Bureau of Patents
Functions: (b) After formal investigation, the Director for Legal Affairs may impose
• Search and examination of patent applications and the grant of one (1) or more of the following administrative penalties:
patents; (i) The issuance of a cease and desist order which shall specify the acts
• 8.2. Registration of utility models, industrial designs, and integrated that the respondent shall cease and desist from and shall require him to
circuits; and submit a compliance report within a reasonable time which shall be fixed
• Conduct studies and researches in the field of patents in order to in the order;
assist the Director General in formulating policies on the administration (ii) The acceptance of a voluntary assurance of compliance or
and examination of patents. discontinuance as may be imposed. Such voluntary assurance may include
one or more of the following:
II. Bureau of Trademarks (1) An assurance to comply with the provisions of the intellectual
• Search and examination of the applications for the registration of property law violated;
marks, geographic indications and other marks of ownership and the (2) An assurance to refrain from engaging in unlawful and unfair acts
issuance of the certificates of registration; and and practices subject of the formal investigation;
• Conduct studies and researches in the field of trademarks in order to (3) An assurance to recall, replace, repair, or refund the money value
assist the Director General in formulating policies on the administration of defective goods distributed in commerce; and
and examination of trademarks. (4) An assurance to reimburse the complainant the expenses and
costs incurred in prosecuting the case in the Bureau of Legal Affairs.
III. Bureau of Copyright and Other Related Rights The Director of Legal Affairs may also require the respondent to submit
• Exercise original jurisdiction to resolve disputes relating to the terms of periodic compliance reports and file a bond to guarantee compliance of
license involving the author’s right to public performance or other his undertaking;
communication of his work; (iii) The condemnation or seizure of products which are subject of the
• Accept, review, and decide on applications for the accreditation of offense. The goods seized hereunder shall be disposed of in such manner
collective management organizations or similar entities; as may be deemed appropriate by the Director of Legal Affairs, such as by
• Conduct studies and researches in the field of copyright and related sale, donation to distressed local governments or to charitable or relief
rights; institutions, exportation, recycling into other goods, or any combination
• Provide other copyright and related rights service and charge reasonable thereof, under such guidelines as he may provide;
fees. (iv) The forfeiture of paraphernalia and all real and personal properties
which have been used in the commission of the offense;
IV. Bureau of Legal Affairs (v) The imposition of administrative fines in such amount as deemed
• Hear and decide opposition to the application for registration of marks; reasonable by the Director of Legal Affairs, which shall in no case be less
cancellation of trademarks; subject to the provisions of Section 64, than Five thousand pesos (P5,000) nor more than One hundred fifty
cancellation of patents, utility models, and industrial designs; and thousand pesos (P150,000). In addition, an additional fine of not more
petitions for compulsory licensing of patents; than One thousand pesos (P1,000) shall be imposed for each day of
• (a) Exercise original jurisdiction in administrative complaints for continuing violation;
violations of laws involving intellectual property rights: Provided, (vi) The cancellation of any permit, license, authority, or registration
That its jurisdiction is limited to complaints where the total damages which may have been granted by the Office, or the suspension of the
claimed are not less than Two hundred thousand pesos (P200,000): validity thereof for such period of time as the Director of Legal Affairs may
Provided further, That availment of the (a) Exercise original jurisdiction in deem reasonable which shall not exceed one (1) year;
administrative complaints for violations of laws involving intellectual (vii) The withholding of any permit, license, authority, or registration
property rights: Provided, That its jurisdiction is limited to complaints which is being secured by the respondent from the Office;
where the total damages claimed are not less than Two hundred thousand (viii) The assessment of damages;
pesos (P200,000): Provided further, That availment of the provisional (ix) Censure; and
remedies may be granted in accordance with the Rules of Court. The (x) Other analogous penalties or sanctions.

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V. Bureau of Documentation, Information and Technology Transfer (b) Collect maintenance fees, issue certified copies of documents in its custody and
• Support the search and examination activities of the Office through the following perform similar other activities; and
activities: (c) Hold in custody all the applications filed with the office, and all patent grants,
(a) Maintain and upkeep classification systems whether they be national or certificate of registrations issued by the office, and the like.
international such as the International Patent Classification (IPC) system; • The Financial Service shall formulate and manage a financial program to ensure
(b) Provide advisory services for the determination of search patterns; availability and proper utilization of funds; provide for an effective monitoring
(c) Maintain search files and search rooms and reference libraries; and system of the financial operations of the Office; and
• The Human Resource Development Service shall design and implement human
(d) Adapt and package industrial property information. resource development plans and programs for the personnel of the Office; provide
• Establish networks or intermediaries or regional representatives; for present and future manpower needs of the organization; maintain high morale
• Educate the public and build awareness on intellectual property through the and favorable employee attitudes towards the organization through the continuing
conduct of seminars and lectures, and other similar activities; design and implementation of employee development programs.
• Establish working relations with research and development institutions as well as
with local and international intellectual property professional groups and the like;
• Perform state-of-the-art searches;
• Promote the use of patent information as an effective tool to facilitate the
development of technology in the country;

• Provide technical, advisory, and other services relating to the licensing and

promotion of technology, and carry out an efficient and effective program for

technology transfer; and

• Register technology transfer arrangements, and settle disputes involving technology

transfer payments.

VI. Bureau of Management Information Services and EDP

• Conduct automation planning, research and development, testing of

systems, contracts with firms, contracting, purchase and maintenance of

equipment, design and maintenance of systems, user consultation, and the

like; and

• Provide management information support and service to the Office.

VII. Bureau of Administrative, Financial and Human Resource Development Service
• The Administrative Service shall:
(a) Provide services relative to procurement and allocation of supplies and
equipment, transportation, messengerial work, cashiering, payment of salaries and
other Office's obligations, office maintenance, proper safety and security, and other
utility services; and comply with government regulatory requirements in the areas
of performance appraisal, compensation and benefits, employment records and
reports;

(b) Receive all applications filed with the Office and collect fees therefor, and

(c) Publish patent applications and grants, trademark applications, and registration
of marks, industrial designs, utility models, geographic indication, and lay-out-
designs of
• The Patent and Trademark Administration Services shall perform the following
functions among others:
(a) Maintain registers of assignments, mergings, licenses, and bibliographic on
patents and trademarks;

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CHAPTER 3 light boxes themselves, and since the light boxes cannot, by any stretch of the imagination, be
LAW ON PATENTS considered as either prints, pictorial illustrations, advertising copies, labels, tags or box wraps,
to be properly classified as copyrightable under the law. Hence, the present petition.

Q: What is Patent?
Q: Three Fold Purpose.
A: Set of exclusive rights granted by the State to an inventor or his assignee for a fixed period
of time in exchange for the disclosure of an invention. A: First, patent law seeks to foster and reward invention; second, it promotes disclosures of
inventions to stimulate further invention and to permit the public to practice the invention
once the patent expires; and lastly, the stringent requirements for the patent protection seek
Q: What is the ultimate goal of the patent system? to ensure that ideas in the public domain remain there for the free use of the public.
A: To bring new designs and technologies into the public domain through disclosure.
Q: First. How would the Patent System reward the inventor?
The act secured to the inventor the exclusive right to make use, and vend the thing patented, A: By granting exclusivity for a period of time.
and consequently to prevent others from exercising like privileges without the consent of the
patentee.
Q: Second.

A: For free
It encourages the creation and disclosure of new useful and non-obvious advances in
technology and design, in return for the exclusive right to practice the invention for the
number of years. Q: How long is the exclusivity?
A: 20 years from filing of the application.
Pearl & Dean (Phil.), Inc. v. Shoemart, Inc. and North Edsa Marketing, Inc., G.R. No.
148222, August 15v, 2003 Q: What is a Patentable Invention?
A: Section 21. Patentable Inventions. - Any technical solution of a problem in any field of
“On one side of the coin is the public which will benefit from new ideas; on the other are human activity which is new, involves an inventive step and is industrially applicable shall be
the inventors who must be protected.” patentable. It may be, or may relate to, a product, or process, or an improvement of any of
the foregoing.
Facts: Petitioner Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of
advertising display units simply referred to as light boxes. Pearl and Dean was able to secure a Q: What are the non-patentable inventions?
Certificate of Copyright Registration over the illuminated display units. Sometime in 1985, A: Section 22. Non-Patentable Inventions. - The following shall be excluded from patent
Pearl and Dean negotiated with respondent Shoemart, Inc. (SMI) for the lease and installation protection:
of the light boxes in SM City North Edsa. Since SM City North Edsa was under construction at
that time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and Dean 22.1. Discoveries, scientific theories and mathematical methods;
agreed. Only the contract for SM Makati, however, was returned signed. However, in 1986, 22.2. Schemes, rules and methods of performing mental acts, playing games or doing
SMI rescinded the contract for SM Makati due to non-performance of the terms thereof. business, and programs for computers;
Sometime in 1989, Pearl and Dean received reports that exact copies of its light boxes were
installed at SM City and in the fastfood section of SM Cubao. It further discovered that 22.3 Methods for treatment of the human or animal body by surgery or therapy and
respondent North Edsa Marketing Inc. (NEMI) is a sister company of SMI and was set up diagnostic methods practiced on the human or animal body. This provision shall not apply to
primarily to sell advertising space in lighted display units located in SMI's different branches. products and composition for use in any of these methods;
In the light of its discoveries, Pearl and Dean, sent a letter to both SMI and NEMI enjoining 22.4. Plant varieties or animal breeds or essentially biological process for the production of
them to cease using the subject light boxes and to remove the same from SMI's establishments plants or animals. This provision shall not apply to micro-organisms and non-biological and
and the payment to Pearl and Dean of compensatory damages in the amount of Twenty microbiological processes.
Million Pesos (P20,000,000.00). Claiming that both SMI and NEMI failed to meet all its Provisions under this subsection shall not preclude Congress to consider the
demands, Pearl and Dean filed a case for infringement of trademark and copyright, unfair enactment of a law providing sui generis protection of plant varieties and animal breeds and a
competition and damages. The Regional Trial Court of Makati ruled in favor of Pearl and Dean. system of community intellectual rights protection:
On appeal, however, the Court of Appeals reversed the trial court. The appellate court upheld
SMI when it posited that what was copyrighted were the technical drawings only, and not the 22.5. Aesthetic creations; and
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22.6. Anything which is contrary to public order or morality. Q: “Not obvious to a person skilled in the art” means?
A: Even if you show it to a person skilled in the art, he still would not have discovered it.
Q: X invented a method of improving the tenderness of meat by injecting an enzyme solution
into the live animal shortly before a slaughter. Is the invention patentable? (Bar question p. NOTE: In cases of drugs and medicine, there is NO inventive step if the invention results from
60) the mere discovery of a new form or property of a known substance which does not result in
A: No. Under Section 22.3 of IPL, methods for treatment of the human or animal body by the enhancement of the known efficacy of the substance.
surgery or therapy and diagnostic methods practiced on the human or animal body are not
patentable. As in the case at bar, it involves methods for treatment of the animal body.
Person skilled in the art – presumed to be an ordinary practitioner aware of what was
common general knowledge in the art at the relevant date.
Q: Cezar works in a car manufacturing company owned by Joab. Cezar is quite innovative and
loves to tinker with things. With the materials and parts of the car, he was able to invent a gas-
saving device that will enable cars t consume less gas. Francis, a co-worker, saw how Cezar Q: Graham factors.
created the device and likewise, came up with the similar gadget, also using scrap materials A: Obviousness shall be determined by looking:
and spare parts of the company. Thereafter, Francis filed an application for registration of his
device with the Bureau of Patents. Eighteen months later, Cezar filed his application for the 1. The scope and content of the prior art;
registration of his deice with the Bureau of Patens. Is the gas-saving device patentable? 2. The level of skill in the art;
Explain. 3. The differences between the claimed invention and prior art;
4. Objective evidence of non-obviousness;
A: Yes. Under the law, for an invention to be patentable, it must be new; it must involve an
inventive step; and it must be industrially applicable. In the case at bar, assuming up to date, Additionally:
there is no invention similar to the subject of the case, such would qualify for patent because 5. Commercial success;
the requisites are present. 6. Long felt b ut unsolved needs; and
7. Failure of others.
Q: Supposing Albert Einstein were alive today and he filed with the Intellectual Property
Office (IPO)an application for the patent for his theory of Relativity expressed in the formula Q: Requisites of patentability.
(E=mc2). The IPO disapproved Einstein’s application on the ground that his theory of A: 1) Novelty; 2) inventive step; and 3) industrial applicability.
relativity is not patentable. Is the IPO correct?

A: Yes. Under Section 22.1, discoveries, scientific theories and mathematical methods are not
patentable, as in the case at bar. Q: What is Novelty?
A: An invention shall not be considered new if it forms part of a prior art.
Q: Mr. Nobel discovered a new method of treating Alzheimer’s involving a special method of
diagnosing the disease, treating it with a new medicine that has been discovered after long Q: What is prior art?
experimentation and field-testing, and novel mental isometric exercises. He comes to you for
advice on how he can have his discoveries protected. Can he legally protect his new method of
diagnosis, the new medicine, and the new method of treatment? If no, why? If yes, why? CLASSIFIED INTO TWO:
A: We need to distinguish. First, belongs to everything that is already available to the public not only in the country but
As to the new method of diagnosis and the new method of treatment, NO. He cannot anywhere in the world.
legally protect the same for it is specifically provided by law a non-patentable. Please refer to Second, includes those that are actually subject of the application for the patent registration.
22.1 and 22.3.
As to the medicine, YES. It is patentable because it is not excluded under the law. Q: Industrially applicable?
Also, the elements of a patentable invention are present.
A: It can be produced and used in any industry. (Sec. 27) It must have some practical use.

Q: What is an inventive step?
An invention will be useless if it is forever confined in the sphere of the theories and
A: An inventive step is when the invention is not obvious to a person skilled in the art. principles.
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Q: Term of patent. Q: Priority date? (foreign application first)
A: 20 years from the filing/priority date, whichever is applicable. But this is not absolute. A: Section 31. Right of Priority. - An application for patent filed by any person who has
Patent shall cease to be in force and effect if any of the prescribed annual fees previously applied for the same invention in another country which by treaty, convention, or law
therefor is not paid within the prescribed time or if the patent is cancelled in accordance with affords similar privileges to Filipino citizens, shall be considered as filed as of the date of
the provisions of the law. filing the foreign application: Provided, That: (a) the local application expressly claims
priority; (b) it is filed within twelve (12) months from the date the earliest foreign application
After expiration of patent, the subject matter of patent shall form part of the public was filed; and (c) a certified copy of the foreign application together with an English
domain. translation is filed within six (6) months from the date of filing in the Philippines.

Q: What is the filing date? First-to-file rule under Section 29. Requirements? NOTE: If in the case there is an application filed in the PH and another was filed in another
A: Filing date must not be understood in its plain meaning but rather, it should be taken to country, and the PH application was filed earlier than the other application, it is still possible
mean “only when all the requirements provided under Section 40 are present.” that the foreign application will be granted by virtue of this Right of Priority as long as all the
requisites are complied with.

Section 29. First to File Rule. - If two (2) or more persons have made the invention
separately and independently of each other, the right to the patent shall belong to the person Q: What are the requisites of the priority rule?
who filed an application for such invention, or where two or more applications are filed for A: Section 31.
the same invention, to the applicant who has the earliest filing date or, the earliest priority
date. xxx
Provided, That: (a) the local application expressly claims priority; (b) it is filed within twelve
(12) months from the date the earliest foreign application was filed; and (c) a certified copy of
NOTE: There must be ATLEAST TWO PERSONS who have made the invention SEPARATELY the foreign application together with an English translation is filed within six (6) months from
and INDEPENDENTLY of each other. Otherwise, join ownership may exist or application of the date of filing in the Philippines.
Section 67.

Q: Non-prejudicial disclosure? Exceptions?
Sec. 40. Filing Date Requirements. -
A: Element of novelty is that the thing is not yet known to anyone besides the inventor.
40.1. The filing date of a patent application shall be the date of receipt by the Office of at least
the following elements:
(a) An express or implicit indication that a Philippine patent is sought; Exceptions:
(b) Information identifying the applicant; and Sec. 25. Non-Prejudicial Disclosure. -
(c) Description of the invention and one (1) or more claims in Filipino or English. 1. The disclosure of information contained in the application during the twelve (12)
months preceding the filing date or the priority date of the application;
40.2. If any of these elements is not submitted within the period set by the Regulations, the
application shall be considered withdrawn. (n) 2. When the disclosure was made by:
a) The inventor;
b) A patent officer and the information was contained:
Sec. 41. According a Filing Date. - The Office shall examine whether the patent application (a) in another application filed by the inventor and should not have been disclosed
satisfies the requirements for the grant of date of filing as provided in Section 40 hereof. If the by the office, or
date of filing cannot be accorded, the applicant shall be given an opportunity to correct the (b) in an application filed without the knowledge or consent of the inventor by a
deficiencies in accordance with the implementing Regulations. If the application does not third party which obtained the information directly or indirectly from the inventor;
contain all the elements indicated in Section 40, the filing date should be that date when all the or
elements are received. If the deficiencies are not remedied within the prescribed time limit, c) A third party which obtained the information directly or indirectly from the
the application shall be considered withdrawn. inventor.

Q: Effect of non-submission of all the requirements.
A: If these requirements shall not be submitted within the required period, it shall be deemed
withdrawn .
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Q: Who may own the patent? (f) Signatures of the applicants; (g) Identification of the inventor; and
A: The inventor, his heirs, or assigns. Patent may be acquired through succession or (h) Formal drawings.
assignment. May also be subject of join-ownership as when two or more persons have jointly If the formality examination reveals that the drawings were filed after the filing date of the
made an invention. (Sec. 28) application, the BoP shall send notice to the applicant that the same shall be deemed
DELETED unless the applicant requests within two months that the application be granted a
Q: What if it is a commissioned work? new filing date which is the date on which the drawings were filed.
A: The person who commissions the work shall be the owner of the patent UNLESS there
was an agreement to the contrary. (Sec. 30) If the drawings were not filed, BoP shall require the applicant to file the same within 2 months
and inform the applicant that a new filing date will be given and that is when the date the
drawings are filed. If however, the same still were not filed in due time, any reference to them
Q: In case an employee made the invention in the course of his employment contract, to whom in the application shall be deemed DELETED.
shall it belong?

A: It depends.
Q: Classification and search.
It shall belong to the employee, if the inventive activity is NOT A PART OF HIS
REGULAR DUTIES even if he uses the time, facilities and materials of the employer. A: The IPO will determine whether or not the subject of application is patentable. A part of the
same is determining of prior art.
It shall belong to the employer, is the invention is the RESULT OF THE
PERFORMANCE OH HIS REGULARLY-ASSIGNED DUTIES, unless there is an agreement,
express or implied, to the contrary. Q: Publication
in the IPO Gazette after expiration of 18 months from the filing date or priority date.
Q: Procedure. Purpose?
1. Filing of the application; A: To serve as a construction notice to the whole world and also to give chance to those who
2. Accordance of the filing date has already patent rights. The publication must contain the bibliographic data, y drawing or
3. Section 42. Formality Examination abstract filed.
4. Section 43. Classification and Search
5. Section 44. Publication of Patent Application. However, an applicant may request for early publication, provided:
6. Section 48. Request for Substantive Examination
7. Section 50. Grant of Patent 1. Applicant submits a written waiver of the a) 18-month period and b) establishment
8. Section 52. Publication Upon Grant of Patent of a search report;
9. Issuance of the Certificate 2. Publication shall not be earlier than 6 months from filing/priority date;
3. Required fee for early publication is paid in full.

Q: Formality of examination? Meaning.
NOTE: After publication, any INTERESTED party may inspect the application documents filed
A: The IPO will examine whether or not the requirements are complied with by the applicant. with the office. But the same may be restricted or prohibited by the Director General if to do
so would be prejudicial to the national security and interests of the Republic of the PH. Before
Rule 603. Formality Examination. - If a patent application has been accorded a filing date publication, any related documents are considered confidential and therefore may not be
and the required fee has been paid within one (1) month, compliance with other requirements open for inspection without the consent of the applicant.
will be checked. Such other requirements may relate to the following:
(a) contents of the request for grant of a Philippine patent; Rights conferred after publication:
(b) Priority documents if with claim of convention priority (i.e., file number, date of filing and As provide under Section 46, the applicant shall have all the rights of a patentee under
country of the priority applications); Section 76 against any person who, without his authorization, exercised any of the
(c) Proof of authority, if the applicant is not the inventor; rights conferred as if a patent had been granted for that invention: Provided, That the said
person had:
(d) Deed of assignment;
46.1. Actual knowledge that the invention that he was using was the subject matter of a
(e) Payment of all fees, (e.g. excess claims) published application; or

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46.2. Received written notice that the invention that he was using was the subject matter of a Section 35. Disclosure and Description of the Invention. -
published application being identified in the said notice by its serial number: 35.1. Disclosure. - The application shall disclose the invention in a manner sufficiently clear
Provided, That the action may not be filed until after the grant of a patent on the and complete for it to be carried out by a person skilled in the art. Where the application
published application and within four (4) years from the commission of the acts concerns a microbiological process or the product thereof and involves the use of a micro-
complained of. organism which cannot be sufficiently disclosed in the application in such a way as to enable
the invention to be carried out by a person skilled in the art, and such material is not available
to the public, the application shall be supplemented by a deposit of such material with an
NOTE: The action granted is limited to CIVIL action only. international depository institution.

Q: Substantive examination. Section 36. The Claims. – (IMPORTANT)
A: Scrutinized checking of the application and the qualification of the inventor. 36.1. The application shall contain one (1) or more claims which shall define the matter
for which protection is sought. Each claim shall be clear and concise, and shall be supported
by the description.
Q: Grant of patent. Purpose?
Wherever appropriate, the claims shall contain:
A: To encourage disclosure to the public.
a) A statement indicating the designation of the subject matter of the invention and those
of technical features which are necessary for the definition of the claimed subject matter
Q: Publication. Purpose? but which, in combination, are part of the prior art;
A: To serve as a construction notice to the whole world and also to give chance to those who b) A characterizing portion preceded by the expression “characterize in that” or
have already patent rights. “characterized by” – stating the technical features which, in combination with features stated
in subparagraph (a), it is desired to protect; and
Q: Issuance of Certificate. Purpose? c) If the application contains drawings, the technical features mentioned in the claims
shall preferably, if the intelligibility of the claim can thereby be increased, be followed by
A: To serve as a proof of grant of patent by the State. reference signs relating to those features and placed between parentheses. The reference
signs shall not construed as limiting the claim.
Q: Filing of the application.
Sec. 32. The Application. - Rule 412, Rules and Regulations on Inventions provides:
32.1. The patent application shall be in Filipino or English and shall contain the following: Prohibited Matter – (a) The application shall not contain:
(a) A request for the grant of a patent; (i) A statement or other matter contrary to “public order” or morality;
(b) A description of the invention; (ii) Statement disparaging the products or processes of any particular person or other
than the applicant, or the merits or validity of applications or patents of any such person.
(c) Drawings necessary for the understanding of the invention; Mere comparison with the prior art shall not be considered disparaging per se;
(d) One or more claims; and (iii) Any statement or other matter obviously irrelevant or unnecessary under the
(e) An abstract. circumstances.

32.2. No patent may be granted unless the application identifies the inventor. If the If an application contains prohibited matter within the meaning of this Rule, the
applicant is not the inventor, the Office may require him to submit said authority. Bureau shall omit it when publishing the application, indicating the place and number of
words or drawing omitted.
Section 33. Appointment of Agent or Representative. - An applicant who is not a resident of
the Philippines must appoint and maintain a resident agent or representative in the
Philippines upon whom notice or process for judicial or administrative procedure relating to Q: Unity of Invention.
the application for patent or the patent may be served.
A: application should always relate to one invention only OR to a group of inventions forming
a single general inventive concept.


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Q: How to identify “group of inventions forming a single general inventive concept”? TWO REASONS:
A: The true test in determining whether it forms part of a single general inventive concept is: 1. The rejections have given the applicant suggestions of strengthening amendments
if the several inventions can stand on its own or if they are independent of others, then it can so that claims have been made infinitely less vulnerable than would be otherwise
be applied for individually. If otherwise, then it forms part of a single inventive concept and possible;
must be applied for as a whole. 2. Every point raised by the examiner and finally decided by the Bureau in favor of the
applicant will give him a prima facie standing on that point in court.
Q: What should the examiner do several inventions do not form a single general inventive
concept? NOTE: The decisions of the IPO with respect to granting of an application or on any point
A: Under section 38 of IPL, the Director may require that the application be restricted to a connected with it will be presumed to be correct by the courts.
single invention.
NOTE ALSO: Grant of patent shall take effect on the date of publication of grant in the IPO
Q: When is the filing date in case of several inventions? Gazette.
A: A later application filed for an invention divided out shall be considered as having been
filed on the same day as the first application: Provided, That the later application is filed ADDITIONAL NOTES:
within four (4) months after the requirement to divide becomes final, or within such AMENDMENTS
additional time, not exceeding four (4) months, as may be granted: Provided further, That
each divisional application shall not go beyond the disclosure in the initial application. The applicant may amend the patent application during the examination provided it doesn’t
include new matter outside the scope of disclosure in the original application.

After final rejection or action, amendments may be made cancelling claims or complying
with any requirement in form which has been made, and amendments presenting rejected
Smith Kline Beckman Corp. v. Court of Appeals 409 SCRA 33 (2003) claims in better form for consideration on appeal. BUT any proceeding relative thereto shall not
“Divisional Applications” comes into play when two or more inventions are claimed in a single operate to relieve the application of its condition as subject to appeal or to save it from being
application but are of such nature that a single patent may not be issued for them. Applicant is considered withdrawn.
thus required “to divide,” that is, to limit the claims to whichever invention he may elect,
whereas those inventions not elected may be made the subject of separate applications. If any Amendments touching the merits of the application presented after final rejection, may
of the requisite contents of the Application is not submitted within the period set, application be accepted upon showing of good and sufficient reasons why they are necessary and were
shall be considered withdrawn. not earlier presented.

Q: Law contest?
A: An application is prosecuted EX PARTE by the applicant (no defendant). It is like a lawsuit Phil. Pharmawealth, Inc. v. Pfizer, Inc. and Pfizer (Phil.), Inc., G.R. No. 167715, November
but the court itself is acting as the adverse party. 17, 2010
Doctrine: The exclusive right of a patentee to make, use and sell a patented product exists only
The Examiner, with a duty imbued with public interest, must not look after the interests of the during the term of the patent.
applicant. They are required to be vigilant to identify if there exist patent issues for the subject
matter which render it non-patentable and whether there has already been disclosure in prior
inventions, hence already available to the public at large. ANNUAL FEES
First annual fee shall be due and payable on the expiration of four years from the
date the application is published, and on each subsequent anniversary of such date.
Q: Case of “Tough Love.”
If annual fee is not paid within the prescribed time, the application shall be
A: Making it hard for the applicant to get the application. “A hard fought application will deemed withdrawn or the patent shall be considered as lapsed from the due date of the
produce a patent much more likely to stand in court than a patent shich has slid through the annual fee.
Bureau easily.
Grace period: 6 months, provided that prescribed surcharge for delayed payment be paid.

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SURRENDER OF PATENT (b) That the patent does not disclose the invention in a manner sufficiently clear and complete
The owner of the patent, with consent of all persons having grants or licenses or other for it to be carried out by any person skilled in the art; or
right/interest which have been recorded in the office, may surrender his patent or any claim (c) That the patent is contrary to public order or morality.
forming part thereof to the Office for cancellation. 61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim,
cancellation may be effected to such extent only.
The patent shall cease to have effect as from the day when notice of acceptance is published in
the IPO Gazette. Q: What does the second ground mean?
A: If you give the same tools/process to a person skilled in the art, he could do it. There must
No action for infringement shall lie and no right compensation shall accrue for any use of the be full disclosure.
patented invention before that day for the services of the Government.
Q: Example of inventions contrary to morals? Vibrators? Is it contrary to public morals?
CORRECTION OF MISTAKES A:
If incurred through the fault of the Office when clearly disclosed in the records, the Director of
Patent has the power to correct such mistakes WITHOUT FEE, upon written petition of the
patentee or assignee of record and upon tender to the Office of the copy of the patent issued. Q: Requirements for filing a petition for cancellation?
Section 62. Requirement of the Petition. - The petition for cancellation shall be in writing,
verified by the petitioner or by any person in his behalf who knows the facts, specify the
If not incurred without fault of the Office, such may still be granted if it involves formal or grounds upon which it is based, include a statement of the facts to be relied upon, and filed
clerical errors, upon request and payment of the prescribed fee by the same persons with the Office. Copies of printed publications or of patents of other countries, and other
mentioned. supporting documents mentioned in the petition shall be attached thereto, together with the
translation thereof in English, if not in English language.
Changes allowed:
Section 59.1. The owner of a patent shall have the right to request the Bureau to make the JURISDICTION: Director of Legal Affairs
changes in the patent in order to:
a. Limit the extent of the protection conferred by it; Upon filing of petition, DLA shall serve notice of the filing thereof upon the patentee
b. Correct obvious mistakes or to correct clerical errors; and and all persons having grants and licenses as appears in the record in the Office, and of notice
c. Correct mistakes or errors, other than those referred to in letter (b), made in of date of hearing. It shall be published in the IPO Gazette.
good faith: Provided, That where the change would result in a broadening of
the extent of protection conferred by the patent, no request may be made
after the expiration of two (2) years from the grant of a patent and the In cases involving highly technical issues, on motion of any party, the Director may
change shall not affect the rights of any third party which has relied on the order that the petition be heard and decided by a Committee composed of DLA as chairman
patent, as published. and two members who have experience or expertise in the field of technology to which the
patent relates. Decision of the Committee shall be APPEALABLE TO THE DIRECTOR GENERAL.
59.2. No change in the patent shall be permitted under this section, where the change would
result in the disclosure contained in the patent going beyond the disclosure contained in the
application filed. Effect of cancellation: Rights conferred is deemed terminated.
Q: What are the grounds for cancellation of patent? Sec. 29. First to File Rule. - If two (2) or more persons have made the invention separately
and independently of each other, the right to the patent shall belong to the person who filed
Sec. 61. Cancellation of Patents. - an application for such invention, or where two or more applications are filed for the same
61.1. Any interested person may, upon payment of the required fee, petition to cancel the invention, to the applicant who has the earliest filing date or, the earliest priority date.
patent or any claim thereof, or parts of the claim, on any of the following grounds:
(a) That what is claimed as the invention is not new or patentable;

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Q: Two classes of inventors? 76.4. The court may, according to the circumstances of the case, award damages in a sum
1. Person declared by Final Court Order as having Right to the Patent (a person above the amount found as actual damages sustained: Provided, That the award does not
referred in Section 29 other than the applicant); exceed three (3) times the amount of such actual damages.
2. True and actual inventor (a person deprived of his patent without his consent or 76.5. The court may, in its discretion, order that the infringing goods, materials and
through fraud). implements predominantly used in the infringement be disposed of outside the channels of
commerce or destroyed, without compensation.
Q: Remedies against infringement. 76.6. Anyone who actively induces the infringement of a patent or provides the infringer with
a component of a patented product or of a product produced because of a patented process
Section 67. Patent Application by Persons Not Having the Right to a Patent. - knowing it to be especially adopted for infringing the patented invention and not suitable for
67.1. If a person referred to in Section 29 other than the applicant, is declared by final substantial non-infringing use shall be liable as a contributory infringer and shall be jointly
court order or decision as having the right to the patent, such person may, within three (3) and severally liable with the infringer. (Sec. 42, R. A. No. 165a)
months after the decision has become final:
(a) Prosecute the application as his own application in place of the applicant; Sec. 77. Infringement Action by a Foreign National. - Any foreign national or juridical entity
(b) File a new patent application in respect of the same invention; who meets the requirements of Section 3 and not engaged in business in the Philippines, to
which a patent has been granted or assigned under this Act, may bring an action for
(c) Request that the application be refused; or infringement of patent, whether or not it is licensed to do business in the Philippines under
(d) Seek cancellation of the patent, if one has already been issued. existing law.

Sec. 68. Remedies of the True and Actual Inventor. - If a person, who was deprived of the Prescription period: 4 years.
patent without his consent or through fraud is declared by final court order or decision to be
the true and actual inventor, the court shall order for his substitution as patentee, or at the
option of the true inventor, cancel the patent, and award actual and other damages in his Sec. 80. Damages; Requirement of Notice. - Damages cannot be recovered for acts of
favor if warranted by the circumstances. infringement committed before the infringer had known; or had reasonable grounds to know
of the patent. It is presumed that the infringer had known of the patent if on the patented
product, or on the container or package in which the article is supplied to the public, or on the
Q: For the remedies, what action/s is/are available? Civil and criminal? advertising material relating to the patented product or process, are placed the
A: It depends. Absolutely, one may file a civil action against the infringer within the period words "Philippine Patent" with the number of the patent.
allowed by law. However, a person may file a criminal action against the infringer if the act is
repeated. DEFENSES IN ACTION FOR INFRINGEMENT: The defendant may show the invalidity of the
The penalty for criminal action is – not less than 6 months, not more than 3 years and/or a patent, or any claim thereof, based on the ground provided under Section 81.
fine of not less than 100,000 to not more than 300,000. This is PROBATIONABLE.

Sec. 76. Civil Action for Infringement. - ADDITIONAL NOTES:
76.1. The making, using, offering for sale, selling, or importing a patented product or a product
obtained directly or indirectly from a patented process, or the use of a patented process
without the authorization of the patentee constitutes patent infringement. RIGHTS CONFERRED BY PATENT
76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented Section 71.1. A patent shall confer on its owner the following exclusive rights:
invention, whose rights have been infringed, may bring a civil action before a court of (a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any
competent jurisdiction, to recover from the infringer such damages sustained thereby, unauthorized person or entity from making, using, offering for sale, selling or importing that
plus attorney’s fees and other expenses of litigation, and to secure an injunction for the product;
protection of his rights.
(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any
76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, unauthorized person or entity from using the process, and from manufacturing, dealing in,
the court may award by way of damages a sum equivalent to reasonable royalty. using, selling or offering for sale, or importing any product obtained directly or indirectly from
such process.

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71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, Doctrine: Once the drugs and medicines were introduced in the Philippines or anywhere else
and to conclude licensing contracts for the same. in the world by the patent owner, the right to import the same shall be available to any
government agency or any private third party.
NOTE: The rights conferred are broader in process because the owner not only controls the
use of the process but also the product obtained from such process, whether directly or Facts: The petitioner Roma Drug was among the 6 local drugstores in Pampanga raided by
indirectly. the joint NBI and BFAD inspectors where various medicines were found and seized on the
strength of a search warrant issued by the RTC of Pampanga and upon the request of Glaxo
Smithkline, a registered corporation and the authorized Philippine distributor of the
Rights of Joint Owners: Neither of the joint owners may grant licenses or to assign his right, medicines seized from said drugstores. The NBI proceeded in filing a complaint against
title or interest or part thereof, without consent of other owner(s), or without proportionally petitioner for violation of Section 4 (in relation to Sections 3and 5) of Republic Act No. 8203,
diving the proceeds therewith. also known as the Special Law on Counterfeit Drugs (SLCD), with the Office of the Provincial
Prosecutor in San Fernando, Pampanga. The law prohibits the sale of counterfeit drugs, which
include an "unregistered imported drug product". The term "unregistered" signifies lack
Q: Limitations of Patent Rights of registration with the Bureau of Patent, Trademark and Technology Transfer of a trademark
A: The owner of a patent has no right to prevent third parties from performing, without his of a drug in the name of a natural or juridical person. The seized drugs are identical in content
authorization the acts referred to in Section 72, as amended by R.A. 9502 also known as with their Philippine-registered counterparts. No claim was made that the drugs were
“Universally Accessible Cheaper and Quality Medicine Act 2008, to wit: adulterated in any way or mislabeled at the least. Their classification as "counterfeit" is based
1. Using a patented product which has been put on the market in the Philippines by the solely on the fact that they were imported from abroad and not purchased from Philippine-
owner of the product, or with his express consent, insofar as such use is performed after that registered owner of the patent or trademark of the drugs.
product has been so put on the said market;
2. Where the act is done privately and on a non-commercial scale or for a non- Issue: Whether or not Roma Drug can import the questioned medicines.
commercial purpose: Provided, That it does not significantly prejudice the economic
interests of the owner of the patent;
Ruling: Roma Drug can import the subject medicines. Section 7 of Rep. Act No. 9502 amends
3. Where the act consists of making or using exclusively for the purpose of experiments Section 72 of the Intellectual Property Code in that the later law unequivocally grants third
that relate to the subject matter of the patented invention; persons the right to import drugs or medicines whose patent were registered in
4. In case of drugs and medicines, where the act includes testing, using, making, or selling the the Philippines by the owner of the product:
invention including any data related thereto, solely for the purpose reasonably related to
the development and submission of information and issuance of approvals by
government regulatory agencies required under the law of the Philippines or of Sec. 7. Section 72 of Republic Act No. 8293, otherwise known as the Intellectual Property Code
another country that regulates the manufacture, construction, use or sale of any of the Philippines, is hereby amended to read as follows:
product; (LICENSING PURPOSES) Sec. 72. Limitations of Patent Rights. The owner of a patent has no right to prevent third
5. Where the act consists of the preparation for individual cases, in a pharmacy or by a parties from performing, without his authorization, the acts referred to in Section 71 hereof in
medical professional, of a medicine in accordance with a medical prescription or acts the following circumstances:
concerning the medicine so prepared; 72.1. Using a patented product which has been put on the market in the Philippines by the
6. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other owner of the product, or with his express consent, insofar as such use is performed after that
country entering the territory of the Philippines temporarily or product has been so put on the said market: Provided, That, with regard to drugs and
accidentally: Provided, That such invention is used exclusively for the needs of the ship, medicines, the limitation on patent rights shall apply after a drug or medicine has been
vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold introduced in the Philippines or anywhere else in the world by the patent owner,
within the Philippines. or by any party authorized to use the invention: Provided, further, That the right to
import the drugs and medicines contemplated in this section shall be available to any
government agency or any private third party;

xxx
Roma Drug and Romeo Rodriguez v. Glaxo SmithKline, G.R. No. 149907, April 16, 2009
Q: Who is a Prior User?

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A: Any user, who, in good faith was using the invention or has undertaken serious (a) In situations of national emergency or other circumstances of extreme urgency as
preparations to use the invention in his enterprise or business, before the filing date or provided under Section 74.1(c), the right holder shall be notified as soon as reasonably
priority date of the application on which a patent is granted, shall have the right to continue practicable;
the use thereof as envisaged in such preparations within the territory where the patent (b) In the case of public non-commercial use of the patent by the patentee, without
produces its effect. (Section 73.1) satisfactory reason, as provided under Section 74.1 (d), the right holder shall be informed
However, to protect the patent owner, the right of the prior user may only be promptly: Provided, That, the Government or third person authorized by the Government,
transferred or assigned together with his enterprise or business, or with that part of his without making a patent search, knows or has demonstrable ground to know that a valid
enterprise or business in which the use or preparations for use have been made. (Section patent is or will be used by or for the Government;
73.2) (c) If the demand for the patented article in the Philippines is not being met to an adequate
In short, the prior use cannot assign the right to use the patented product or process extent and on reasonable terms as provided under Section 74.1 (e), the right holder shall be
without giving up entirely his enterprise. informed promptly;
(d) The scope and duration of such use shall be limited to the purpose for which it was
Q: Can the Government use the patent without the consent of the owner? authorized;
A: Generally, no. The government is bound to respect the patent. This, however, is subject to (e) Such use shall be non-exclusive;
certain exceptions wherein a government agency or a third party authorized by the (f) The right holder shall be paid adequate remuneration in the circumstances of each case,
Government may exploit the invention without the consent of the owner, to wit: taking into account the economic value of the authorization; and
(a) The public interest, in particular, national security, nutrition, health or the (g) The existence of a national emergency or other circumstances of extreme urgency,
development of other sectors, as determined by the appropriate agency of the referred to under Section 74.1 (c), shall be subject to the determination of the President of the
government, so requires; or Philippines for the purpose of determining the need for such use or other exploitation, which
(b) A judicial or administrative body has determined that the manner of exploitation, shall be immediately executory.
by the owner of the patent or his licensee, is anti-competitive.
74.3. All cases arising from the implementation of this provision shall be cognizable by courts
Additional exceptions were provided by R.A 9502 otherwise known as “ACT PROVIDING FOR with appropriate jurisdiction provided by law.
CHEAPER AND QUALITY MEDICINES” purposely to bring down the price of medicines in the No court, except the Supreme Court of the Philippines, shall issue any temporary restraining
country, to wit: order or preliminary injunction or such other provisional remedies that will prevent its
immediate execution.
SECTION 74. Use of Invention by Government. - 74.1. A Government agency or third person
authorized by the Government may exploit the invention even without agreement of the 74.4. The Intellectual Property Office (IPO), in consultation with the appropriate government
patent owner where: agencies, shall issue the appropriate implementing rules and regulations for the use or
(a) The public interest, in particular, national security, nutrition, health or the development of exploitation of patented inventions as contemplated in this section within one hundred
other sectors, as determined by the appropriate agency of the government, so requires; or twenty (120) days after the effectivity of this law.
(b) A judicial or administrative body has determined that the manner of exploitation, by the
owner of the patent or his licensee is anti-competitive; or Q: What is the extent of protection conferred by the patent?
(c) In the case of drugs and medicines, there is a national emergency or other circumstance of A: The extent shall be determined by the claims, which are to be interpreted in the light of the
extreme urgency requiring the use of the invention; or description and drawings. It is the patent claims that describe the scope of the patent.
(d) In the case of drugs and medicines, there is public non-commercial use of the patent by the
patentee, without satisfactory reason; or
Note: Consideration must be given not only to all the elements as expressed in the claims but
(e) In the case of drugs and medicines, the demand for the patented article in the Philippines also equivalents.
is not being met to an adequate extent and on reasonable terms, as determined by the
Secretary of the Department of Health.

74.2. Unless otherwise provided herein, the use by the Government, or third person
authorized by the Government shall be subject, where applicable, to the following provisions:

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Smith Kline Beckman Corp. v. Court of Appeals, G.R. No. 126627, August 14, 2003 of the patent. While Albendazole is admittedly a chemical compound that exists by a name
different from that covered in SKBC’s letters patent, the language of Letter Patent No. 14561
fails to yield anything at all regarding Albendazole. And no extrinsic evidence had been
Doctrine: When the language of its claims is clear and distinct, the patentee is bound thereby adduced to prove that Albendazole inheres in SKBC’s patent in spite of its omission therefrom
and may not claim anything beyond them. The courts may not add or detract from the claims or that the meaning of the claims of the patent embraces the same. While SKBC concedes that
matters not expressed or necessarily implied, nor may they enlarge the patent beyond the the mere literal wordings of its patent cannot establish Tyco Pharma’s infringement, it urges
scope of that which the inventor claimed and the patent office allowed, even if the patentee the Court to apply the doctrine of equivalents.
may have been entitled to something more than the words it had chosen to include.
The doctrine of equivalents provides that an infringement also takes place when a
device appropriates a prior invention by incorporating its innovative concept and, although
Doctrine of Equivalents; provides that an infringement also takes place when a device with some modification and change, performs substantially the same function in substantially
appropriates a prior invention by incorporating its innovative concept and, although with the same way to achieve substantially the same result. Yet again, a scrutiny of SKBC’s evidence
some modification and change, performs substantially the same function in substantially fails to convince the Court of the substantial sameness of SKBC’s patented compound and
the same way to achieve substantially the same result. Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity
of result does not amount to infringement of patent unless Albendazole operates in substantially
the same way or by substantially the same means as the patented compound, even though it
Facts: performs the same function and achieves the same result.
Petitioner Smith Kline Beckman Corporation (SKBC) was granted by the Philippine Patent In other words, the principle or mode of operation must be the same or
Office Letters Patent No. 14561 over an invented compound entitled “Methods and substantially the same. The doctrine of equivalents thus requires satisfaction of the
Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2- function-means-and-result test, the patentee having the burden to show that all
Benzimidazole Carbamate.” Such compound is claimed to be an active ingredient in three components of such equivalency test are met.
fighting various parasites in certain types of domestic and livestock animals. Respondent
Tryco Pharma (Tryco) sells veterinary products including a drug Impregon which contains
Albendazole as an active ingredient which fights against parasites in animals. Petitioner SKBC
then filed an action against respondent Tryco for patent infringement claiming that the patent Q: What is the test under the Doctrine of Equivalents?
granted to them includes said Albendazole. In their defense respondent Tryco alleges that
Letters Patent No. 14561 granted to petitioner SKBC does not include Albendazole for A: Function-means-and-result test.
nowhere is such word found in the patent. The Trial Court rendered its decision in favor of
respondent Tryco which was affirmed by the Court of Appeals. Q: Why did the Supreme Court say that this test was not met?
A: The means by which the inventions operated on are not basically proven to be the same.

Ruling: Q: What is Voluntary Licensing?
From an examination of the evidence on record, the Court finds nothing infirm in the A: One of the ways by which the inventor may reap the economic benefits from the invention,
appellate court’s conclusions with respect to the principal issue of whether Tycho Pharma by granting authority to enterprises that can commercially exploit the invention, either by
committed patent infringement to the prejudice of SKBC. The burden of proof to substantiate manufacturing, distribution or retail selling.
a charge for patent infringement rests on the plaintiff. In the case at bar, petitioner’s evidence
consists primarily of its Letters Patent No. 14561, and the testimony of Dr. Orinion, its general
manager in the Philippines for its Animal Health Products Division, by which it sought Section 85. Voluntary License Contract. - To encourage the transfer and dissemination of
to show that its patent for the compound methyl 5 propylthio-2- benzimidazole carbamate technology, prevent or control practices and conditions that may in particular cases constitute
also covers the substance Albendazole. From a reading of the 9 claims of Letters Patent No. an abuse of intellectual property rights having an adverse effect on competition and trade, all
14561 in relation to the other portions thereof, no mention is made of the compound technology transfer arrangements shall comply with the provisions of this Chapter.
Albendazole.

When the language of its claims is clear and distinct, the patentee is bound thereby
and may not claim anything beyond them. And so are the courts bound which may not add to NOTE: In here, the inventor is the licensor and the other party as the licensee.
or detract from the claims matters not expressed or necessarily implied, nor may
they enlargethe patent beyond the scope of that which the inventor claimed and the patent Q: What is its purpose?
office allowed, even if the patentee may have been entitled to something more than the words
it had chosen would include. It bears stressing that the mere absence of the word Albendazole A: So that more persons would be able to enjoy the same, keeping in mind that the ultimate
in Letters Patent No. 14561 is not determinative of Albendazole’s non-inclusion in the claims goal of Intellectual Property Law is to put the inventions into Public Domain.
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Q: What are the objectives? A: Generally, it is the Director of Legal Affairs that has original jurisdiction over petitions for
A: First, to encourage dissemination and transfer of technology and second, to prevent compulsory licensing of patents.
practices that may have an adverse effect on competition and trade.
Exception: As to compulsory licenses arising from R.A. 9502 otherwise known as “ACT
TAKE NOTE: Prohibited and mandatory clauses provided under Sections 87-88, as earlier PROVIDING FOR CHEAPER AND QUALITY MEDICINES,” wherein jurisdiction is lodged with
discussed in page 4. (MEMORIZE AT LEAST THREE for midterms, finals, and BAR) the Director General of the Intellectual Property Office.
Section. 91. Exceptional Cases. - In exceptional or meritorious cases where substantial ADDITIONAL NOTES:
benefits will accrue to the economy, such as high technology content, increase in foreign
exchange earnings, employment generation, regional dispersal of industries and/or SECTION 93. Grounds for Compulsory Licensing.
substitution with or use of local raw materials, or in the case of Board of Investments,
registered companies with pioneer status, exemption from any of the above requirements 1. National emergency or other circumstances of extreme urgency;
may be allowed by the Documentation, Information and Technology Transfer Bureau after 2. Where the public interest, in particular, national security, nutrition, health or the
evaluation thereof on a case by case basis. development of other vital sectors of the national economy as determined by the
appropriate agency of the Government, so requires; or
3. Where a judicial or administrative body has determined that the manner of
RIGHTS RESERVED TO LICENSOR AND LICENSEE exploitation by the owner of the patent or his licensee is anti-competitive; or
4. In case of public non-commercial use of the patent by the patentee, without
satisfactory reason;
Section. 89. Rights of Licensor. - In the absence of any provision to the contrary in the 5. If the patented invention is not being worked in the Philippines on a commercial
technology transfer arrangement, the grant of a license shall not prevent the licensor from scale, although capable of being worked, without satisfactory reason: Provided, That
granting further licenses to third person nor from exploiting the subject matter of the the importation of the patented article shall constitute working or using the patent;
technology transfer arrangement himself. and
6. Where the demand for patented drugs and medicines is not being met to an
adequate extent and on reasonable terms, as determined by the Secretary of the
Section. 90. Rights of Licensee. - The licensee shall be entitled to exploit the subject matter of Department of Health.
the technology transfer arrangement during the whole term of the technology transfer
arrangement.
Republic Act 9502 (8293) inserted after Section 93 the following provisions:

REGISTRATION OF LICENSE CONTRACT SECTION 93-A. Procedures on Issuance of a Special Compulsory License under the TRIPS
Agreement. - 93-A.1. The Director General of the Intellectual Property Office, upon the written
Section. 92. Non-Registration with the Documentation, Information and Technology recommendation of the Secretary of the Department of Health, shall, upon filing of a petition,
Transfer Bureau. - Technology transfer arrangements that conform with the provisions of grant a special compulsory license for the importation of patented drugs and medicines. The
Sections 86 and 87 need not be registered with the Documentation, Information and special compulsory license for the importation contemplated under this provision shall be an
Technology Transfer Bureau. Non-conformance with any of the provisions of Sections 87 and additional special alternative procedure to ensure access to quality affordable medicines and
88, however, shall automatically render the technology transfer arrangement unenforceable, shall be primarily for domestic consumption: Provided, That adequate remuneration shall be
unless said technology transfer arrangement is approved and registered with the paid to the patent owner either by the exporting or importing country. The compulsory
Documentation, Information and Technology Transfer Bureau under the provisions of Section license shall also contain a provision directing the grantee the license to exercise reasonable
91 on exceptional cases. measures to prevent the re-exportation of the products imported under this provision.

Q: What is Compulsory Licensing? The grant of a special compulsory license under this provision shall be an exception to
A: This covers situations where licenses are awarded against the will of the patent owner, Sections 100.4 and 100.6 of Republic Act No. 8293 and shall be immediately executor.
by reason of State Policies.

Q: Who has jurisdiction over petitions for compulsory licensing?

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No court, except the Supreme Court of the Philippines, shall issue any temporary restraining Sec. 97. Compulsory License Based on Interdependence of Patents. - If the invention
order or preliminary injunction or such other provisional remedies that will prevent the grant protected by a patent, hereafter referred to as the "second patent," within the country cannot
of the special compulsory license. be worked without infringing another patent, hereafter referred to as the "first patent,"
granted on a prior application or benefiting from an earlier priority, a compulsory license may
be granted to the owner of the second patent to the extent necessary for the working of his
93-A.2. A compulsory license shall also be available for the manufacture and export of drugs invention, subject to the following conditions:
and medicines to any country having insufficient or no manufacturing capacity in the
pharmaceutical sector to address public health problems: Provided, That, a compulsory 97.1. The invention claimed in the second patent involves an important technical advance of
license has been granted by such country or such country has, by notification or otherwise, considerable economic significance in relation to the first patent;
allowed importation into its jurisdiction of the patented drugs and medicines from the 97.2. The owner of the first patent shall be entitled to a cross-license on reasonable terms to
Philippines in compliance with the TRIPS Agreement. use the invention claimed in the second patent;
97.3. The use authorized in respect of the first patent shall be non-assignable except with the
93-A.3. The right to grant a special compulsory license under this section shall not limit or assignment of the second patent; and
prejudice the rights, obligations and flexibilities provided under the TRIPS Agreement and 97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act. (Sec. 34-C, R. A.
under Philippine laws, particularly Section 72.1 and Section 74 of the Intellectual Property No. 165a)
Code, as amended under this Act. It is also without prejudice to the extent to which drugs and
medicines produced under a compulsory license can be exported as allowed in the TRIPS
Agreement and applicable laws. Sec. 98. Form and Contents of Petition. - The petition for compulsory licensing must be in
writing, verified by the petitioner and accompanied by payment of the required filing
fee. It shall contain the name and address of the petitioner as well as those of the respondents,
SECTION 94. Period for Filing a Petition for a Compulsory License. - 94.1. A compulsory the number and date of issue of the patent in connection with which compulsory license is
license may not be applied for on the ground stated in Subsection 93.5 before the sought, the name of the patentee, the title of the invention, the statutory grounds upon which
expiration of a period of four (4) years from the date of filing of the application or three compulsory license is sought, the ultimate facts constituting the petitioner's cause of action,
(3) years from the date of the patent whichever period expires last. and the relief prayed for.

For all other grounds, except the Subsection 93.5, may be applied for any time after the grant Sec. 100. Terms and Conditions of Compulsory License. - The basic terms and conditions
of patent. including the rate of royalties of a compulsory license shall be fixed by the Director of Legal
Affairs subject to the following conditions:
REQUIREMENTS: Petitioner must first make efforts to obtain authorization from the patent 100.1. The scope and duration of such license shall be limited to the purpose for which it was
owner on reasonable commercial terms and conditions. If unsuccessful within a reasonable authorized;
period of time, license may then be granted. 100.2. The license shall be non-exclusive;
100.3. The license shall be non-assignable, except with that part of the enterprise or business
Such requirements shall not apply in the following cases: with which the invention is being exploited;
a. Where the petition for compulsory license seeks to remedy a practice determined 100.4. Use of the subject matter of the license shall be devoted predominantly for the supply
after judicial or administrative process to be anti-competitive; of the Philippine market: Provided, That this limitation shall not apply where the grant of the
b. In situations of national emergency or other circumstances of extreme urgency; license is based on the ground that the patentee’s manner of exploiting the patent is
c. In cases of public non-commercial use; and determined by judicial or administrative process, to be anti-competitive.
d. In cases where the demand for the patented drugs and medicines in the Philippines 100.5. The license may be terminated upon proper showing that circumstances which led to
is not being met to an adequate extent and on reasonable terms, as determined by its grant have ceased to exist and are unlikely to recur: Provided, That adequate protection
the Secretary of the Department of Health. shall be afforded to the legitimate interest of the licensee; and
100.6. The patentee shall be paid adequate remuneration taking into account the economic
In cases involving Semi-Conductor Technology: license may only be granted for grounds 3 value of the grant or authorization, except that in cases where the license was granted to
& 4. remedy a practice which was determined after judicial or administrative process, to be anti-
competitive, the need to correct the anti-competitive practice may be taken into account in
fixing the amount of remuneration.


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Sec. 101. Amendment, Cancellation, Surrender of Compulsory License. ASSIGNMENT OF RIGHTS
101.1. Upon the request of the patentee or the licensee, the Director of Legal Affairs may
amend the decision granting the compulsory license, upon proper showing of new facts or Q: May patent be assigned?
circumstances justifying such amendment.
A: Yes, patent being a property, is susceptible of assignment.
101.2. Upon the request of the patentee, the said Director may cancel the compulsory license:

(a) If the ground for the grant of the compulsory license no longer exists and is unlikely to
recur; Inventions and any right covered thereby may be assigned or transmitted by inheritance or
bequest or may be the subject of a license contract.
(b) If the licensee has neither begun to supply the domestic market nor made serious
preparation therefor;
(c) If the licensee has not complied with the prescribed terms of the license; Q: What is the extent of the assignment?
101.3. The licensee may surrender the license by a written declaration submitted to the A: The assignment may be of the entire right, title or interest in and to the patent and the
Office. invention or of an undivided share of the entire patent and invention, in which event the
parties become joint owners.
101.4. The said Director shall cause the amendment, surrender, or cancellation in the
Register, notify the patentee, and/or the licensee, and cause notice thereof to be published in
the IPO Gazette. Q: What are the rules in Assignment?
Section 105. Form of Assignment. - The assignment must be:
Sec. 102. Licensee’s Exemption from Liability. - Any person who works a patented product, 1. In writing;
substance and/or process under a license granted under this Chapter, shall be free from any 2. Acknowledged before a notary public or other officer authorized to administer oath
liability for infringement: Provided however, That in the case of voluntary licensing, no or perform notarial acts; and
collusion with the licensor is proven. This is without prejudice to the right of the rightful 3. Certified under the hand and official seal of the notary or such other officer.
owner of the patent to recover from the licensor whatever he may have received as royalties
under the license.
Q: Where to record?
A: Section 106. Recording. - The Office, for registration, in books and records kept for the
purpose.

Q: Period to record?

A: Within three (3) months from the date of said instrument, or prior to the subsequent
purchase or mortgage.

Q: What is the effect of failure to record?
A: Such instruments shall be void as against any subsequent purchaser or mortgagee for
valuable consideration and without notice, unless, it is so recorded in the Office, within three
(3) months from the date of said instrument, or prior to the subsequent purchase or mortgage.

In short, it will not bind third parties but the parties themselves are estopped.

Q: What is the essence of registration?

A: It serves as constructive notice to the whole world.

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Q: What are the rights of Joint Owners? (a) That the claimed invention does not qualify for registration as a utility model and
A: Each of the joint owners shall be entitled to personally make, use, sell, or import the does not meet the requirements of registrability, in particular having regard to
invention for his own profit: Provided, however, That neither of the joint owners shall be Subsection 109.1 and Sections 22, 23, 24 and 27;
entitled to grant licenses or to assign his right, title or interest or part thereof without the (b) That the description and the claims do not comply with the prescribed requirements;
consent of the other owner or owners, or without proportionally dividing the proceeds with (c) That any drawing which is necessary for the understanding of the invention has not
such other owner or owners. (Section 107) been furnished;
(d) That the owner of the utility model registration is not the inventor or his successor in
title.
Q: How can there be joint ownership?
1. When two (2) or more persons have jointly made an invention; (distinguished from Q: May an application for patent registration be converted into a registration of a utility
two or more person having invented the same SEPARATELY and INDEPENDENTLY model?
of each other. First to file rule will apply.)
2. When there is assignment of undivided share of the entire patent and invention. A: Yes, it may only be done once, at any time before the grant or refusal of such patent upon
payment of prescribed fee. In which the filing date accorded shall be that of the initial
application.
Q: What is a Utility Model?
A: It is a petty patent for new and industrially applicable for technical solution of a problem. It Q: May it be done vice versa?
is a statutory monopoly granted for a limited time in exchange for an inventor providing
providing sufficient teaching of his or her invention to permit a person of ordinary skill in the A: Yes.
relevant art to perform the invention.
Sec. 111. Prohibition against Filing of Parallel Applications. - An applicant may not file two
Q: What is an example of a Utility Model? (2) applications for the same subject, one for utility model registration and the other for the
grant of a patent whether simultaneously or consecutively.
A: A cellphone. In the earlier days, cellphone were only use for call and text but right now, it
has a camera. Hence, it keeps on evolving. (Atty. Busmente)
Q: What are Industrial Designs?
Q: How is it different from Patentable Invention? A: Under RA 9502, there are three distinct subject matter under this part, namely:
A: Utility model is like a Patentable Invention without the requirement of an inventive step. The 1. An Industrial Design is any composition of lines or colors or any three-dimensional form,
only requirements are that it is new and industrially applicable. whether or not associated with lines or colors: Provided, That such composition or form gives
a special appearance to and can serve as pattern for an industrial product or handicraft;

2. Integrated Circuit means a product, in its final form, or an intermediate form, in which the
All provisions governing patents shall apply, mutatis mutandis, to the registration of elements, at least one of which is an active element and some or all of the interconnections are
utility models except with the following: integrally formed in and/or on a piece of material, and which is intended to perform an
Requirement for patentability: (a) An invention qualifies for registration as a utility model if it electronic function; and
is new and industrially applicable, (b) Section 21, "Patentable Inventions", shall apply except 3. Layout-Design is synonymous with 'Topography' and means the three-dimensional
the reference to inventive step as a condition of protection; disposition, however expressed, of the elements, at least one of which is an active element,
and of some or all of the interconnections of an integrated circuit, or such a three-dimensional
disposition prepared for an integrated circuit intended for manufacture.
Procedure: Sections 43(classification and search) to 49(amendment of application) shall not
apply in the case of applications for registration of a utility model.
CONDITIONS FOR PROTECTION
Term: A utility model registration shall expire, without any possibility of renewal, at the end Section. 113. Substantive Conditions for Protection.-
of the seventh year after the date of the filing of the application. 113.1. Only industrial designs that are new or ornamental shall benefit from protection
under this Act.
Grounds for cancellation: In proceedings under Sections 61(cancellation of patent) to 113.2. Industrial designs dictated essentially by technical or functional considerations to
64(committee of Three), the utility model registration shall be canceled on the following obtain a technical result or those that are contrary to public order, health or morals shall
grounds: not be protected.
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113.3. Only layout -designs of integrated circuits that are original shall benefit from protection (1) Reproduction of the registered layout-design for private purposes or for the sole purpose
under this Act. A layout-design shall be considered original if it is the result of its creator's of evaluation, analysis, research or teaching;
own intellectual effort and is not commonplace among creators of layout-designs and (2) Where the act is performed in respect of a layout-design created on the basis of such
manufacturers of integrated circuits at the time of its creation. analysis or evaluation and which is itself original in the meaning as provided herein;
113.4. A layout-design consisting of a combination of elements and interconnections that are (3) Where the act is performed in respect of a registered lay-out-design, or in respect of an
commonplace shall be protected only if the combination, taken as a whole, is original. integrated circuit in which such a layout-design is incorporated, that has been put on the
market by or with the consent of the right holder;
TERM OF REGISTRATION (4) In respect of an integrated circuit where the person performing or ordering such an act did
Section. 118. The Term of Industrial Design or Layout-Design Registration. – not know and had no reasonable ground to know when acquiring the integrated circuit or the
article incorporating such an integrated circuit, that it incorporated an unlawfully reproduced
118.1. The registration of an industrial design shall be for a period of five (5) years from layout-design: Provided, however, That after the time that such person has received sufficient
the filing date of the application. notice that the layout-design was unlawfully reproduced, that person may perform any of the
118.2. The registration of an industrial design may be renewed for not more than two (2) said acts only with respect to the stock on hand or ordered before such time and shall be liable
consecutive periods of five (5) years each, by paying the renewal fee. to pay to the right holder a sum equivalent to at least 5% of net sales or such other reasonable
royalty as would be payable under a freely negotiated license in respect of such layout-design;
118.3. The renewal fee shall be paid within twelve (12) months preceding the or
expiration of the period of registration. However, a grace period of six (6) months shall
be granted for payment of the fees after such expiration, upon payment of a surcharge. (5) Where the act is performed in respect of an identical layout-design which is original and
has been created independently by a third party.

118.5. Registration of a layout-design shall be valid for a period of ten (10) years, without
renewal, and such validity to be counted from the date of commencement of the CANCELLATION OF DESIGN REGISTRATION
protection accorded to the layout-design. The protection of a layout-design under this Act Sec. 120. Cancellation of Design Registration. - 120.1. At any time during the term of the
shall commence: industrial design registration, any person upon payment of the required fee, may petition the
a) On the date of the first commercial exploitation, anywhere in the world, of the Director of Legal Affairs to cancel the industrial design on any of the following grounds:
layout-design by or with the consent of the right holder: Provided, That an i. If the subject matter of the industrial design is not registerable within the terms of
application for registration is filed with the Intellectual Property Office within two Sections 112 and 113;
(2) years from such date of first commercial exploitation; or ii. If the subject matter is not new; or
b) On the filing date accorded to the application for the registration of the layout- iii. If the subject matter of the industrial design extends beyond the content of the
design if the layout-design has not been previously exploited commercially anywhere application as originally filed.
in the world.
Where the grounds for cancellation relate to a part of the industrial design, cancellation
may be effected to such extent only. The restriction may be effected in the form of an
NOTE: Provisions relating to patent registration shall apply, mutatis mutandis, to industrial alteration of the effected features of the design.
design registrations.
120.3. Grounds for Cancellation of Layout-Design of Integrated Circuits.- Any interested
RIGHTS AND LIMITATINS CONFERRED OF LAYOUT DESIGN REGISTRATION person may petition that the registration of a layout-design be canceled on the ground that:
119.4. Rights Conferred to the Owner of a Layout-Design Registration. - The owner of a i. The layout-design is not protectable under this Act;
layout-design registration shall enjoy the following rights: ii. The right holder is not entitled to protection under this Act; or
iii. Where the application for registration of the layout-design, was not filed within two
(1) To reproduce, whether by incorporation in an integrated circuit or otherwise, the (2) years from its first commercial exploitation anywhere in the world.
registered layout-design in its entirety or any part thereof, except the act of
reproducing any part that does not comply with the requirement of originality; and Where the grounds for cancellation are established with respect only to a part of the
(2) To sell or otherwise distribute for commercial purposes the registered layout layout-design, only the corresponding part of the registration shall be canceled.
design, an article or an integrated circuit in which the registered layout-design is Any canceled layout-design registration or part thereof, shall be regarded as null and
incorporated. void from the beginning and may be expunged from the records of the Intellectual Property
119.5. Limitations of Layout Rights. - The owner of a layout design has no right to prevent Office.
third parties from reproducing, selling or otherwise distributing for commercial purposes the
registered layout-design in the following circumstances:
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CHAPTER 4 Birkenstock Orthopaedie GMBH And Co. KG v. Philippine Shoe Expo Marketing
LAW ON TRADEMARK Corporation, G.R. No. 194307, November 20, 2013
DOCTRINE: It is not the application or registration of a trademark that vests ownership

thereof, but it is the ownership of a trademark that confers the right to register the same.
Changes introduced by the present law on trademark: Registration merely creates a prima facie presumption: a) of the validity of the registration; b)
1. The requirement of prior use of the mark as a requisite for the filing of trademark of the registrant’s ownership of the trademark, and; c) of the exclusive right to the use thereof.
registration has been removed; The presumption of ownership accorded to a registrant must necessarily yield to superior
2. Use or registration in the Philippines of well-known marks is no longer required for evidence of actual and real ownership of trademark.
its protection to similar goods. If the well-known marks are registered, such
registration can prohibit its use even to non-related products;
3. The supplemental register has been abolished. Facts:
Birkenstock Orthopaedie GMBH and Co. KG (“BOGC”), a corporation duly

organized and existing under the laws of Germany, applied with the Intellectual Property
Q: What is a Trademark? Office of the Philippines (“IPOPHL”) for the registration of its three trademarks which was
A: It is a distinctive mark of authenticity through which the merchandise of a particular opposed by Philippine Shoe Expo Marketing Corporation (“PSEMC”) on the ground that the
producer or manufacturer may be distinguished from that of others. latter has been using the mark “BIRKENSTOCK” and device in the Philippines for more than 16
years. The mark was initially registered by Shoe Town International and Industrial
Corporation on 21 October 1993 and subsequently acquired by PSEMC. However, it was later
Q: What are its functions? cancelled due to non-filing of the 10th Year Declaration of Actual Use, a requirement in the
1. To designate distinctively the origin of the products to which it is attached. Simply Philippines to keep the mark active and to maintain the protection of the mark.
stating, to distinguish one’s goods from the other; The Opposition was denied by the Director General who later allowed the
2. They guarantee that those articles come up to a certain standard of quality; and registration of the three marks holding that the cancellation of PSEMC’s mark removed the
3. They advertise the articles they symbolize. (Diseenting opinion of Justice Feliciano impediment to grant registration to the subject applications.
in Philip Morris, Inc. v. CA, 224 SCRA 576) To establish ownership of the mark “BIRKENSTOCK,” BOGC submitted various
photocopies of certificates of registration in various countries and evidence relating to the
Q: What is a Mark? origin and history of the mark and its use in commerce long before PSEMC was able to register
the same in the Philippines. It was proved that “BIRKENSTOCK” was first adopted in Europe
A: It is any visible sign capable of distinguishing the goods (trademark) or services (service in 1774 by its inventor, Johann Birkenstock, on his line of quality footwear and thereafter,
mark) of an enterprise and shall include a stamped or marked container of goods. numerous generations of his kin continuously engaged in the manufacture and sale of shoes
and sandals bearing the mark ”BIRKENSTOCK” until it was passed on to BOGC.
Q: Is a registration of a Trademark a mode of acquiring ownership?
A: No. Registration merely creates a prima facie presumption: a) of the validity of the Ruling:
registration; b) of the registrant’s ownership of the trademark, and; c) of the exclusive right to Having considered the foregoing, the Court found BOGC to be the true and lawful owner of the
the use thereof. Such presumption is rebuttable and must give way to evidence to contrary. mark “BIRKENSTOCK” and that PSEMC was in bad faith in having it registered in its
name. The Court was of the opinion that “it is very remote that two persons coined the same
or identical marks. To come up with a highly distinct and uncommon mark previously
appropriated by another, for use in the same line of business, and without any plausible
explanation, is incredible. Being in the same line of business, it is highly probable that PSEMC
knew of the existence of ‘BIRKENSTOCK’ and its use by the BOGC, before the former

appropriated the same mark and had it registered in its name.”

Under Section 2 of RA 166, which is also the law governing the subject applications, in order
to register a trademark, one must be the owner thereof and must have actually used the mark
in commerce in the Philippines for two (2) months prior to the application for registration.
Section 2-A of the same law sets out to define how one goes about acquiring ownership
thereof. Under the same section, it is clear that actual use in commerce is also the test of
ownership but the provision went further by saying that the mark must not have been so
appropriated by another. Significantly, to be an owner, Section 2-A does not require that the

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actual use of a trademark must be within the Philippines. Thus, under RA 166, one may be an mark in relation to those goods or services would indicate a connection between
owner of a mark due to its actual use but may not yet have the right to register such those goods or services, and the owner of the registered mark: Provided
ownership here due to the owner's failure to use the same in the Philippines for two (2) further, That the interests of the owner of the registered mark are likely to be
months prior to registration. damaged by such use;

g) Is likely to mislead the public, particularly as to the nature, quality, characteristics
“Failure to file the Declaration of Actual Use (“DAU”) within the requisite period results or geographical origin of the goods or services;
in the automatic cancellation of registration of a trademark. Such failure is tantamount h) Consists exclusively of signs that are generic for the goods or services that they seek
to the abandonment or withdrawal of any right or interest the registrant has over his to identify;
trademark.” i) Consists exclusively of signs or of indications that have become customary or usual
The Court emphasized that, “registration of a trademark, by itself, is not a mode of to designate the goods or services in everyday language or in bona fide and
acquiring ownership. If the applicant is not the owner of the trademark, he has no right to established trade practice;
apply for its registration. Registration merely creates a rebuttable presumption of the validity j) Consists exclusively of signs or of indications that may serve in trade to designate
of the registration, of the registrant’s ownership of the trademark, and of the exclusive right to the kind, quality, quantity, intended purpose, value, geographical origin, time or
the use thereof.” production of the goods or rendering of the services, or other characteristics of the
goods or services;
The Court went on to state that “[a] trademark is an industrial property over which its owner k) Consists of shapes that may be necessitated by technical factors or by the nature of
is entitled to property rights which cannot be appropriated by unscrupulous entities that, in the goods themselves or factors that affect their intrinsic value;
one way or another, happen to register such trademark ahead of its owner.” l) Consists of color alone, unless defined by a given form; or
m) Is contrary to public order or morality.
Q: What are the non-registrable marks provided under the law?
Section 123.1. A mark cannot be registered if it:
a) Consists of immoral, deceptive or scandalous matter, or matter which may
disparage or falsely suggest a connection with persons, living or dead, institutions, Fredco Manufacturing corp. v. President and Fellows of Harvard College, G.R. No. 185917,
beliefs, or national symbols, or bring them into contempt or disrepute; June 1, 2011
b) Consists of the flag or coat of arms or other insignia of the Philippines or any of
its political subdivisions, or of any foreign nation, or any simulation thereof; Doctrine: While under the territoriality principle a mark must be used in commerce in the
c) Consists of a name, portrait or signature identifying a particular living Philippines to be entitled to protection, internationally well-known marks are the exceptions
individual except by his written consent, or the name, signature, or portrait of a to this rule.
deceased President of the Philippines, during the life of his widow, if any,
except by written consent of the widow;
d) Is identical with a registered mark belonging to a different proprietor or a Although Section 2 of the Trademark law (R.A. 166) requires for the registration of
mark with an earlier filing or priority date, in respect of: trademark that the applicant thereof must prove that the same has been actually in use in
i. The same goods or services, or commerce or services for not less than two (2) months in the Philippines before the
ii. Closely related goods or services, or application for registration is filed, where the trademark sought to be registered has already
iii. If it nearly resembles such a mark as to be likely to deceive or cause been registered in a foreign country that is a member of the Paris Convention, the
confusion; requirement of proof of use in the commerce in the Philippines for the said period is not
e) Is identical with, or confusingly similar to, or constitutes a translation of a mark necessary. An applicant for registration based on home certificate of registration need not
which is considered by the competent authority of the Philippines to be well-known even have used the mark or trade name in this country.
internationally and in the Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for registration, and used for Facts:
identical or similar goods or services: Provided, That in determining whether a mark
is well-known, account shall be taken of the knowledge of the relevant sector of the Petitioner Fredco Manufacturing Corporation (Fredco), a corporation organized and existing
public, rather than of the public at large, including knowledge in the Philippines under the laws of the Philippines, filed a Petition for Cancellation of Registration No. 56561
which has been obtained as a result of the promotion of the mark; before the Bureau of Legal Affairs of the Intellectual Property Office (IPO) against respondents
f) Is identical with, or confusingly similar to, or constitutes a translation of a mark President and Fellows of Harvard College (Harvard University), a corporation organized and
considered well-known in accordance with the preceding paragraph, which is existing under the laws of Massachusetts, United States of America. The case was docketed as
registered in the Philippines with respect to goods or services which are not similar Inter Partes Case No. 14-2005-00094.
to those with respect to which registration is applied for: Provided, That use of the
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Fredco alleged that Registration No. 56561 was issued to Harvard University on 25 November Thus, under Philippine law, a trade name of a national of a State that is a party to the
1993 for the mark "Harvard Veritas Shield Symbol" for decals, tote bags, serving trays, Paris Convention, whether or not the trade name forms part of a trademark, is protected
sweatshirts, t-shirts, hats and flying discs under Classes 16, 18, 21, 25 and 28 of the Nice "without the obligation of filing or registration."
International Classification of Goods and Services. Fredco alleged that the mark "Harvard" for "Harvard" is the trade name of the world famous Harvard University, and it is also a
t-shirts, polo shirts, sandos, briefs, jackets and slacks was first used in the Philippines on 2 trademark of Harvard University. Under Article 8 of the Paris Convention, as well as Section
January 1982 by New York Garments Manufacturing & Export Co., Inc. (New York Garments), 37 of R.A. No. 166, Harvard University is entitled to protection in the Philippines of its trade
a domestic corporation and Fredco's predecessor-in-interest. On 24 January 1985, New York name "Harvard" even without registration of such trade name in the Philippines. This means
Garments filed for trademark registration of the mark "Harvard" for goods under Class 25. that no educational entity in the Philippines can use the trade name "Harvard" without the
The application matured into a registration and a Certificate of Registration was issued on 12 consent of Harvard University. Likewise, no entity in the Philippines can claim, expressly or
December 1988, with a 20-year term subject to renewal at the end of the term. The impliedly through the use of the name and mark "Harvard," that its products or services are
registration was later assigned to Romeo Chuateco, a member of the family that owned New authorized, approved, or licensed by, or sourced from, Harvard University without the latter's
York Garments. consent.
Fredco alleged that it was formed and registered with the Securities and Exchange As such, even before Harvard University applied for registration of the mark "Harvard" in the
Commission on 9 November 1995 and had since then handled the manufacture, promotion Philippines, the mark was already protected under Article 6bis and Article 8 of the Paris
and marketing of "Harvard" clothing articles. Fredco alleged that at the time of issuance of Convention. Again, even without applying the Paris Convention, Harvard University can
Registration No. 56561 to Harvard. University, New York Garments had already registered the invoke Section 4 (a) of R.A. No. 166 which prohibits the registration of a mark "which may
mark "Harvard" for goods under Class 25. Fredco alleged that the registration was cancelled disparage or falsely suggest a connection with persons, living or dead, institutions,
on 30 July 1998 when New York Garments inadvertently failed to file an affidavit of use/non- beliefs..."
use on the fifth anniversary of the registration but the right to the mark "Harvard" remained
with its predecessor New York Garments and now with Fredco.
Harvard University, on the other hand, alleged that it is the lawful owner of the name and
mark "Harvard" in numerous countries worldwide, including the Philippines. The name and Ang v. Teodoro, G.R. No. 48226, 74 PHIL 50-56, December 14, 1942
mark "Harvard" was adopted in 1639 as the name of Harvard College of Cambridge,
Massachusetts, U.S.A. The name and mark "Harvard" was allegedly used in commerce as early Doctrine; Doctrine of Secondary Meaning: This doctrine is to the effect that a word or
as 1872. Harvard University is over 350 years old and is a highly regarded institution of phrase originally incapable of exclusive appropriation with reference to an article on the
higher learning in the United States and throughout the world. market, because geographically or otherwise descriptive, might nevertheless have been used
so long and so exclusively by one producer with reference to his article that, in that trade and
to that branch of the purchasing public, the word or phrase has come to mean that the article
Ruling: was his product.
There are two compelling reasons why Fredco's petition must fail. Facts:
First, Fredco's registration of the mark "Harvard" and its identification of origin as Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as
"Cambridge, Massachusetts" falsely suggest that Fredco or its goods are connected with a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910.
Harvard University, which uses the same mark "Harvard" and is also located in Cambridge, On September 29, 1915, he formally registered it as trade-mark and as trade-name on January
Massachusetts. This can easily be gleaned from the following oblong logo of Fredco that it 3, 1933. Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts
attaches to its clothing line. Fredco's registration of the mark "Harvard" should not have been on April 11, 1932, and established a factory for the manufacture of said articles in the year
allowed because Section 4 (a) of R.A. No. 166 prohibits the registration of a mark "which may 1937. The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the grounds
disparage or falsely suggest a connection with persons, living or dead, institutions, that the two trademarks are dissimilar and are used on different and non-competing goods;
beliefs…" Fredco's use of the mark "Harvard," coupled with its claimed origin in Cambridge, that there had been no exclusive use of the trade-mark by the plaintiff; and that there had
Massachusetts, obviously suggests a false connection with Harvard University. On this ground been no fraud in the use of the said trade-mark by the defendant because the goods on which
alone, Fredco's registration of the mark "Harvard" should have been disallowed. it is used are essentially different from those of the plaintiff.

The Court of Appeals reversed said judgment, directing the Director of Commerce to cancel
Second, the Philippines and the United States of America are both signatories to the the registration of the trade-mark "Ang Tibay" in favor of petitioner, and perpetually enjoining
Paris Convention for the Protection of Industrial Property (Paris Convention). Thus, this Court the latter from using said trade-mark on goods manufactured and sold by her.
has ruled that the Philippines is obligated to assure nationals of countries of the Paris
Convention that they are afforded an effective protection against violation of their intellectual
property rights in the Philippines in the same way that their own countries are obligated to Issue: Are the goods or articles or which the two trademarks are used similar or belong to the
accord similar protection to Philippine nationals. same class of merchandise?

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The function of a trade-mark is to point distinctively, either by its own meaning or by
association, to the origin or ownership of the wares to which it is applied. "Ang Tibay," as used
by the respondent to designate his wares, had exactly performed that function for twenty-two
years before the petitioner adopted it as a trade-mark in her own business. "Ang Tibay" shoes
and slippers are, by association, known throughout the Philippines as products of the "Ang
Tibay" factory owned and operated by the respondent. Even if "Ang Tibay," therefore, were
not capable of exclusive appropriation as a trade-mark, the application of the doctrine of
secondary meaning could nevertheless be fully sustained because, in any event, by
respondent's long and exclusive use of said phrase with reference to his products and his
business, it has acquired a proprietary connotation. This doctrine is to the effect that a word
or phrase originally incapable of exclusive appropriation with reference to an article on the
market, because geographically or otherwise descriptive, might nevertheless have been used
so long and so exclusively by one producer with reference to his article that, in that trade and
to that branch of the purchasing public, the word or phrase has come to mean that the article
was his product.


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Intellectual Property Law

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CHAPTER

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

(a) An express or implicit indication that a Philippine patent is sought; Exceptions:

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

Q: What are Industrial Designs?

DOCTRINE: It is not the application or registration of a trademark that vests ownership

Birkenstock Orthopaedie GMBH and Co. KG (“BOGC”), a corporation duly

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

Intellectual Property Law (Atty. Busmente)

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